Vonrosenberg v. Lawrence

• Decision Date: 19 September 2019
• Docket Number: Civil Action No. 2:13-587-RMG
• Citation: 412 F.Supp.3d 612
• Court: U.S. District Court — District of South Carolina
• Parties: The Right Reverend Charles G. VONROSENBERG, et al., Plaintiffs, The Episcopal Church, Plaintiff in Intervention v. The Right Reverend Mark J. LAWRENCE, et al., Defendants.

412 F.Supp.3d 612

The Right Reverend Charles G. VONROSENBERG, et al., Plaintiffs,The Episcopal Church, Plaintiff in Intervention

v.The Right Reverend Mark J. LAWRENCE, et al., Defendants.

Civil Action No. 2:13-587-RMG

United States District Court, D. South Carolina, Charleston Division.

Signed September 19, 2019

Jason Severin Smith, Thomas S. Tisdale, Jr., Hellman Yates and Tisdale, Robert Walker Humphrey, II, Willoughby and Hoefer, Charleston, SC, Matthew Dempsey McGill, Pro Hac Vice, Gibson Dunn and Crutcher, Washington, DC, for Plaintiffs.

Andrew Spencer Platte, Charles Alan Runyan, James Andrew Yoho, Howell Gibson and Hughes, Beaufort, SC, C. Mitchell Brown, Nelson Mullins Riley and Scarborough, John Edward Cuttino, Gallivan White and Boyd, Henry P. Wall, Bruner Powell Wall and Mullins LLC, Columbia, SC, Charles Hiram Williams, II, Williams and Williams, Robert R. Horger, Horger Barnwell and Reid, Orangeburg, SC, David Spence Cox, Barnwell Whaley Patterson and Helms LLC, Ivon Keith McCarty, McCarty Law Firm, William A. Scott, Pedersen and Scott, Mark Victor Evans, Mark V. Evans Law Office, David B. Marvel, Marvel et al LLC, Andrew Marvin Connor, Nelson Mullins Riley and Scarborough, G. Mark Phillips, Nelson Mullins Riley and Scarborough, William Foster Gaillard, Womble Bond Dickinson US LLP, Catherine Robinson Graham, Paul E. Sperry, Copeland Stair Kingma and Lovell LLP, Allan Poe Sloan, III, Joseph C. Wilson, IV, Pierce Herns Sloan and McLeod, Oana D. Johnson, Oana D. Johnson Attorney at Law, Ryan Earhart, Earhart Overstreet LLC, Charleston, SC, Henrietta U. Golding, Burr and Forman LLP, Susan P. MacDonald, Nelson Mullins Riley and Scarborough, Robert S. Shelton, Bellamy Rutenburg Copeland Epps Gravely and Bowers, Karolan Furr Ohanesian, Ohanesian and Ohanesian, Myrtle Beach, SC, Lance A. Lawson, Pro Hac Vice, Burr and Forman LLP, Charlotte, NC, C. Pierce Campbell, Turner Padget Graham and Laney, Lawrence Bradley Orr, Orr Elmore and Ervin, Saunders M. Bridges, Jr., Aiken Bridges, Florence, SC, Harry Roberson Easterling, Jr., Easterling Law Firm, Bennettsville, SC, John Furman Wall, III, Mount Pleasant, SC, William A. Bryan, Bryan and Haar, Surfside Beach, SC, Peter Brandt Shelbourne, Summerville, SC, Harry A. Oxner, Oxner and Stacy, Georgetown, SC, for Defendants.

ORDER AND OPINION

Richard Mark Gergel, United States District Court Judge This matter is before the Court on Plaintiffs The Right Reverend Charles G. vonRosenberg, et al. 's Motion for Summary Judgment (Dkt. No. 584), Plaintiff-in-Intervention The Episcopal Church's Motion for Summary Judgment (Dkt. No. 595), Defendants The Right Reverend Mark J. Lawrence, et al. 's Motion for Summary Judgment (Dkt. No. 603), and Defendants The Right Reverend Mark J. Lawrence, et al. 's Motion for Summary Judgment as to Genericness. (Dkt. No. 610.).¹

I. Background

This case arises out of a schism in 2012 in the Historic Diocese, originally known as the "Protestant Episcopal Church in the State of South Carolina," in which certain members and parishes sought to dissociate from The Episcopal Church, a nationwide hierarchical church. The parties have litigated property issues related to the schism in the state courts of South Carolina, culminating in a 2017 decision in the South Carolina Supreme Court. In this action, the Parties have raised issues surrounding the use of certain trademarks in contest between The Episcopal Church and its affiliates and the disassociating diocese and its affiliates.

It is important at the outset to identify the major parties in this dispute, a process complicated by the fact that the Defendant disassociating diocese has attempted to identify itself through the use of marks which the national church and its affiliates assert infringe on and dilute their trademarks and constitute false advertising. The principal parties are as follows:

1) Plaintiff The Episcopal Church (hereafter "TEC") is the national church and an Intervenor Plaintiff in this action;

2) The Protestant Episcopal Church in the State of South Carolina (hereafter the "Historic Diocese"), which was formed as early as 1785 and was long affiliated with TEC;

3) Plaintiff The Episcopal Church in South Carolina (hereafter "TECSC"), which was headed initially by Plaintiff Bishop Charles G. vonRosenberg and subsequently by Plaintiff Provisional Bishop Gladstone B. Adams, III and is affiliated with TEC;

4) Defendant The Diocese of South Carolina (hereafter the "Disassociated Diocese"² ), headed by Defendant Right Reverend Mark Lawrence and was formed following the schism in 2012 to disassociate from TEC.

5) The Defendant parishes associated with the Disassociated Diocese (hereafter "Disassociated Parishes").

By way of background, in 1784 former members of the Church of England in multiple states, including in South Carolina, formed a convention as part of an effort to form a church that would continue the rites and ceremonies of the Church of England but conform to the principles of the nascent American Revolution and the constitutions of the many states. (Dkt. 595-3 at 14, 17 – 19, 24 – 26; 603 at 17.) By October 4, 1785, this new organization was called "The Protestant Episcopal Church in the United States of America." (Dkt. No. 595-3 at 24.) The convention was successful, and in October 1789, TEC adopted its first constitution under the name "The Protestant Episcopal Church in the United States of America." (Dkt. Nos. 595-3 at 102; 603 at 17.) Around the same time, and perhaps as early as May 1785, the "Protestant Episcopal Church in the State of South Carolina," began a similar process of planning the transition from the Church of England to a new organization. (Dkt. Nos. 603 at 23; 608-1 at 1; 609-7 at 15.)

This current dispute arises out of a schism in the Historic Diocese that occurred in 2012. Two competing entities, TECSC and the Disassociated Diocese, now claim to be the successor to the Historic Diocese. TECSC was initially led after the schism by a bishop, Plaintiff vonRosenberg following his appointment by the leadership of TEC. The Disassociated Diocese is led by Plaintiff Lawrence, who had formerly been appointed the bishop of the Historic Diocese by TEC but was removed from that position when he moved to disassociate from TEC. The disputes in this litigation center on the use of various marks by the Disassociated Diocese and its affiliates which Plaintiffs assert are owned by TEC or its affiliate and successor to the Historic Diocese, TECSC. On the other hand, the Disassociated Diocese claims to be the successor of the Historic Diocese and thus entitled to use certain marks owned by the Historic Diocese.

In 2007, TEC registered five marks with the United States Patent and Trademark Office:

• "The Protestant Episcopal Church in the United States";

• "The Episcopal Church";

• "The Episcopal Church Welcomes You";

• "La Iglesia Episcopal", and;

• The Episcopal Shield.³

(Dkt. No. 595-5 – 595-12; 595-64 – 595-69.) All five marks have since had declarations of incontestability filed. (Id. ) The trademark registration for "The Episcopal Church" includes a first use date of January 1, 1967. (Dkt. Nos. 595-8; 595-9.)

In November 2010, two years before the schism, the Historic Diocese, then led by Defendant Lawrence as bishop, registered the following marks with the South Carolina Secretary of State:

• "Diocese of South Carolina";

• "The Episcopal Diocese of South Carolina";

• "The Protestant Episcopal Church in the Diocese of South Carolina";

• "The Diocesan Seal".⁴

(Dkt. No. 584-3.) In October 2012, the Disassociated Diocese withdrew its association with TEC and its accession to the Constitution of The Episcopal Church. (Dkt. Nos. 439 at ¶ 86; 603 at 17.) After the disassociation, Defendant Lawrence began to lead an organization calling itself the "Diocese of South Carolina."⁵ Fifty-five parishes that are part of the Disassociated Diocese are named as Defendants here.⁶ (Dkt. No. 621-2 at 17 – 20; 621-3 at 1 – 11.)

Concurrently, TECSC, under the leadership of Plaintiff Bishop Charles G. vonRosenberg, continued as the local diocese associated with TEC. (Dkt. Nos. 595-1 at 12; 603 at 25.) Because of a state trial court injunction (later overturned by the South Carolina Supreme Court), TECSC was prohibited from using the marks of the Historic Diocese and adopted the name of "The Episcopal Church in South Carolina." Later, Plaintiff vonRosenberg was succeeded as bishop by Plaintiff Gladstone Adams, who was appointed by the duly authorized leadership of TEC.

On January 4, 2013, the Disassociated Diocese and certain associated churches and parishes sued TEC in the Dorchester County Court of Common Pleas seeking a determination of real and personal property rights. On March 5, 2013, Bishop vonRosenberg filed this federal action, alleging trademark infringement and false advertising by the Disassociated Diocese. While this action was pending in federal court, a state trial court issued an order on February 3, 2015 in favor of the Disassociated Diocese on a broad range of issues, including the service marks at issue. (Dkt. No. 86-3 – 83-6.) TEC appealed. On August 2, 2017, the South Carolina Supreme Court held that TEC owned most of the property in dispute and finding that twenty-eight of the Disassociated Parishes held real and personal property in trust for TEC. Protestant Episcopal Church in the Diocese of S.C. v. Episcopal Church , 421 S.C. 211, 265, 806 S.E.2d 82, 111 (2017), reh'g denied (Nov. 17, 2017), cert. denied sub nom. Protestant Episcopal Church in the Diocese of S.C. v. The Episcopal Church , ––– U.S. ––––, 138 S. Ct. 2623, 201 L.Ed.2d 1027 (2018).

After the South Carolina Supreme Court's decision, this Court allowed TEC and TECSC to intervene as plaintiffs in this action. (Dkt. Nos. 87, 140.) On April 16, 2018, this Court allowed the Plaintiffs to amend their pleadings to assert false advertising and trademark infringement claims against the Disassociated Diocese, fifty-five...